Ana L. Ang, petitioner vs.

Torribio Teodoro, respondent

(G.R. No. 48226, 14 December 1942)
Doctrines
1. Definition of secondary meaning: A word or phrase originally incapable of
exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to his article that,
in that trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his product.
2. Test of whether goods are of the same class: The test employed by the courts
to determine whether noncompeting goods are or are not of the same class is
confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the
Patent Office because they are deemed not to possess the same descriptive
properties, they would nevertheless be held by the courts to belong to the
same class if the simultaneous use on them of identical or closely similar
trade- marks would be likely to cause confusion as to the origin, or personal
source, of the second user's goods. They would be considered as not falling
under the same class only if they are so dissimilar or so foreign to each other
as to make it unlikely that the purchaser would think the first user made the
second user's goods.
Facts The respondent Teodoro Toribio brought a suit against petitioner Ana Ang
to prevent her using the trademark Ang Tibay for the pants and shirts that she
manufactures.
Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, has
continuously used "Ang Tibay," both as a trademark and as a tradename, in the
manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He
formally registered it as a trademark on 29 September 29, 1915 and as a tradename
on 3 January 1933.
Meanwhile, Ana Ang registered the same trademark "Ang Tibay" for her pants and
shirts on 11 April 1932 and in 1937, she established a factory to manufacture these
articles.
In 1938, her gross sales amounted to P422,682.09. That same year, she advertised
the factory which she had just built, and it was when this was brought to the
attention of the respondent that he consulted his attorneys and eventually brought
suit.
CFI Manila Presiding Judge Quirico Abreto absolved Ang from Teodoros complaint

(with costs against him), on the grounds that the mark Ang Tibay used by her was
used in goods (pants and shirts) essentially different from and not in competition
with that of Teodoros (slippers and shoes) and there had been no exclusive use of
the said Ang Tibay mark by the respondent.
The Court of Appeals Second Division reversed the trial courts judgment, holding
that that the mark Ang Tibay has already acquired secondary meaning through
uninterrupted and exclusive use since 1910 by the respondent in his manufacture of
shoes and slippers. It also ruled that the goods or articles on which the two
trademarks are used are similar or belong to the same class. It also directed the
Director of Commerce to cancel the petitioners registration of Ang Tibay
trademark for her goods and it enjoined her from using the said trademark.
Hence, this petition by Ana Ang by certiorari which sought reversal of the Court of
Appeals judgment.
Issues raised and held by Supreme Court
(1) Whether the trademark Ang Tibay has acquired secondary meaning through
uninterrupted and exclusive use, and thus, cannot be used by the petitioner in her
products?
Yes. The Supreme Court held that the phrase Ang Tibay already acquired
secondary meaning, not just merely a descriptive term for the merchandise which
respondent has applied them as a trademark.
The Court explained that the phrase "Ang Tibay" is an exclamation denoting
admiration of strength or durability. For instance, one who tries hard but fails to
break an object exclaims "Ang tibay!" ("How strong!") It may also be used in a
sentence thus, "Ang tibay ng sapatos mo!" ("How durable your shoes are!") The
phrase "ang tibay" is never used adjectively to define or describe an object. One does
not say, "ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes," but
"matibay na sapatos" or "sapatos na matibay."
Thus, the Court deduced that the said phrase is not a descriptive term within the
meaning of the Trademark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trademark or tradename.
The phrase "Ang Tibay," being neither geographic nor descriptive, was originally
capable of exclusive appropriation as a trademark.
But were it not so, the application of the doctrine of secondary meaning made by the
Court of Appeals could nevertheless be fully sustained because, in any event, by
Teodoro's long and exclusive use of said phrase with reference to his products and
his business, it has acquired a proprietary connotation.

(2) Whether the Court of Appeals was correct to decide that the goods or articles on
which the two trademarks are used are similar or belong to the same class?
Yes. The Supreme Court held that although two noncompeting articles may be
classified under two different classes by the Patent Office because they are deemed
not to possess the same descriptive properties, they would nevertheless be held by
the courts to belong to the same class if the simultaneous use on them of identical or
closely similar trade- marks would be likely to cause confusion as to the origin, or
personal source, of the second user's goods.